Supreme Court Will Judge Biosimilar Patent Dance

The U.S. Supreme Court has agreed to review some of the patent dispute resolution provisions of the Biologics Price Competition and Innovation Act (BPCIA). The Court granted certiorari in the dispute between Amgen and Sandoz, where the Federal Circuit decided that the biosimilar patent dance provisions are optional, but pre-marketing notice always is required.

Continue reading this entry

Federal Circuit Questions Standing For IPR Appeals

As I have written previously, neither the statutes nor the regulations governing Inter Partes Review (IPR) require the party challenging the patent to have been charged with infringement, or even to establish any interest in practicing the claimed subject matter. While the USPTO Patent Trial and Appeal Board (PTAB) has not imposed any standing requirements on IPR petitioners, the January 9, 2017 Federal Circuit decision in Phigenix, Inc. v. Immunogen, Inc. shows that not every petitioner will have standing to appeal a PTAB IPR decision.

Read this article on Foley’s PTAB Trial Insights blog for a summary of the Phigenix decision on standing for IPR appeals, and a discussion of some of the issues it raises.

FDA Releases Biosimilar Guidance for Industry

On December 29, 2016, the FDA issued guidance to assist applicants seeking FDA approval of a proposed biosimilar product under the Biologics Price Competition and Innovation Act of 2009 (BPCIA). To obtain such approval, an applicant must demonstrate that the proposed product is “biosimilar” to a reference biological product already approved by the FDA. The new biosimilar guidance provides information on how such a showing can be made.

Continue reading this entry

EPO Stays Proceedings Over Patentability Of Plants And Animals

While the U.S. is still sorting out “natural products” jurisprudence under 35 USC § 101, the European Patent Office (EPO) is wrestling with the patentability of plants and animals, and has announced an immediate stay on all patent examination and opposition proceedings in which the outcome “depends entirely on the patentability of a plant or animal obtained by an essentially biological process.” The stay was prompted by a recent Notice from the European Commission (EC) concerning Directive 98/44/EC on the legal protection of biotechnological inventions. In the Notice, the EC concluded that plants or animals derived from essentially biological processes are not patentable under the Directive. Until the EPO provides further guidance on this issue, applicants should exercise additional care in drafting the description and claims for inventions related to plants and animals. Continue reading this entry